Tower Tech, Inc.

Trademark Trial and Appeal Board

Feb 26, 2003

No. 75698975 (T.T.A.B. Feb. 26, 2003)

Mailed: February 26,2003
Paper No.17
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tower Tech, Inc.
________
Serial No. 75/698,975
_______
Scott R. Zingerman of Fellers, Snider, Blankenship, Bailey &
Tippens, P.C. for Tower Tech, Inc.
Lynn A. Luthey, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Tower Tech, Inc. has filed an application to register
the mark "TOWER TECH" for "evaporative and conductive heat
transfer equipment, namely cooling towers, heat exchangers,
industrial cooling water treatment units, and parts thereof" in
International Class 11 and "cooling tower rental services, and
construction, erection, and maintenance of cooling towers" in
International Class 37."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
1 Ser. No. 75/698,975, filed on May 6, 1999, which for both the goods
and the services alleges a date of first anywhere and first use in
commerce of October 1995.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/698,975
2
applicant's mark, when applied to its goods and services, so
resembles the mark "TOWERTECH," which is registered for
"construction and maintenance services, namely building,
inspecting, maintaining, upgrading and removal of towers and
tower sites,"2 as to be likely to cause confusion, mistake or
deception. Registration also has been finally refused under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on
the basis that, when used in connection with applicant's goods
and services, the mark "TOWER TECH" is merely descriptive of
them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal under
Section 2(d), but reverse the refusal under Section 2(e)(1).
Turning first to the refusal under Section 2(d), the
determination thereof is based on an analysis of all of the facts
in evidence which are relevant to the factors bearing on the
issue of whether there is a likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA
1973). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity of the goods and services and the similarity of
the marks.3 Here, inasmuch as the respective marks, when
2 Reg. No. 2,353,414, issued on May 30, 2000, which sets forth a date
of first use anywhere and first use in commerce of September 20, 1998.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and differences
in the marks."
Ser. No. 75/698,975
3
considered in their entireties, are virtually the same in
appearance (differing only in the presence or absence of a space
between the terms "TOWER" and "TECH") and are identical in sound,
connotation and overall commercial impression,4 it is plain that
the contemporaneous use thereof in connection with the same or
closely related goods and/or services would be likely to cause
confusion as to their source or sponsorship. The focus of our
inquiry in this case is accordingly on the similarities and
dissimilarities in the respective goods and services.
Applicant argues, in this regard, that a review of the
specimen of use, which it made of record from the file of the
cited registration, shows that registrant "is in the business of
construction and maintenance of communications towers, such as
cellular telephone, PCS and the like"5 and that nothing in the
recitation of services in such registration "refers to, relates
to, or describes cooling towers." Citing Webster's Encyclopedic
Unabridged Dictionary of the English Language (1996) at 2002 as
authority that "the most common definition of a tower is 'a
building or a structure high in proportion to its lateral
4 Applicant, we observe, has not raised any argument to the contrary.
5 Such specimen, we note, is a letter from registrant's marketing
director to a prospective customer in which registrant is described as
"a newly founded tower construction and maintenance company" whose
"major emphasis is in the repair and inspection of towers, any size,
any type." Although specifically listing such services as "Wireless
Communications," "Antenna Change Outs," "Lightning, wind damage
repair," "Complete tower construction & tower maintenance," "Civil
construction," "Post-construction inspections," "Routine scheduled
maintenance," "Preventive maintenance," "Aesthetic maintenance,"
"General services including: Bulb & strobe light changes," and "Small
repairs to towers, mounts, lightning problems, grounding, connectors
on lines, jumpers on antennas, and hangers for coax lines," the letter
also states that "[t]he above list is a mere sample list and does not
limit our level of services."
Ser. No. 75/698,975
4
dimensions, either isolated or forming part of a building,'"
applicant further argues that "[t]his definition would certainly
apply to communications towers of the type which relate to the
services" identified in the cited registration. Applicant
insists, in consequence thereof, that as set forth in such
registration, registrant's services "apply by definition to
communication towers."
By contrast, applicant contends that a cooling tower
"is not truly a 'tower' at all when applying the definition of
'tower' as recited above" and that cooling towers "are not high
(as compared to communications towers or skyscrapers) and,
depending on how measurement is made, the lateral dimension is,
in most cases, greater than or at least equal to its height."
Applicant therefore concludes that "it would be erroneous to
presume that the description of services" in the cited
registration "would include cooling 'towers' such as contained in
Applicant's recitation of goods and services."
Applicant additionally argues that "it is unlikely that
a consumer could mistakenly believe that Applicant's [goods and]
services emanate from the same source as the services" provided
by registrant for the reason that:
Typically, due to the specificity of the
technology involved in communication towers
as opposed to the specificity of the
technology involved in the selection,
purchase, and construction of cooling towers,
and particularly the large cost involved in
both, the purchaser of either a communication
tower or a cooling tower would have a
specialized need, coupled with a specialized
knowledge of the respective technology
involved. Accordingly, the respective
purchasers would be sophisticated purchasers
Ser. No. 75/698,975
5
seeking a specific type of product and
certainly not a casual purchaser.
Such discriminating, sophisticated purchasers, applicant urges,
therefore "would not be confused with regard to the source of
Applicant's goods and services as opposed to those services of
the owner of" the cited registration.6
The Examining Attorney, on the other hand, argues that
applicant's goods and services and registrant's services, as set
forth in the application and cited registration, are identical in
6 Applicant also contends, in light of its claimed date of first use of
October 1995 and the date of first use of September 21, 1998 set forth
in the cited registration, that applicant and registrant "have co-
existed for almost four years" and that, "[i]n that time, Applicant is
unaware of a single incidence of actual confusion." Applicant
maintains that while a "lack of actual confusion is not dispositive,
it is the best evidence that confusion is not likely." However, as
the Examining Attorney, citing Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990) and
cases cited therein, points out in her brief, "[i]t is unnecessary to
show actual confusion" inasmuch as "[t]he test under Section 2(d) of
the Trademark Act is whether there is a likelihood of confusion."
Moreover, we note that applicant's contention regarding the lack
of any instances of actual confusion is simply an argument by its
counsel which is not supported by an affidavit or declaration from
anyone associated with applicant who has firsthand knowledge of
whether there have been any incidents of actual confusion as a result
of the contemporaneous use of the marks at issue. There thus is no
evidence of record as to the nature and extent of the use of the
respective marks and there has been no opportunity to hear from the
registrant on such point. In any event, even if we were to take
counsel's argument as a true statement of fact, suffice it to say that
while the absence of any instances of actual confusion over a
significant period of time is, of course, a du Pont factor which is
indicative of no likelihood of confusion, it is a meaningful factor
only where the evidentiary record demonstrates appreciable and
continuous use by applicant of its mark in the same markets as those
served by registrant under its mark. See, e.g., Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In particular,
there must be evidence showing that there has been an opportunity for
incidents of actual confusion to occur. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Here, as indicated above, there is simply no evidence in the record,
such as information concerning details of the nature and extent of the
sales and marketing activities of applicant and registrant under their
respective marks, from which it could be concluded that the asserted
absence of any incidents of actual confusion is indeed a mitigating
Ser. No. 75/698,975
6
part, in that both include "construction and maintenance of
towers," and are otherwise so closely related that confusion is
likely when respectively offered under the marks "TOWER TECH" and
"TOWERTECH." In particular, the Examining Attorney contends that
"[i]t must be presumed that registrant's services include the
applicant's services and related goods because the registrant's
services are broadly stated." Thus, according to the Examining
Attorney:
The applicant provides cooling towers,
as well as the construction and maintenance
of cooling towers. The registrant's
services, which include construction and
maintenance of towers and tower sites, are
broadly stated and could include cooling
towers. Therefore, a consumer could
mistakenly believe the goods and services
emanate from the same source.
It is well settled that that the issue of likelihood of
confusion must be determined on the basis of the goods and
services as they are set forth in the involved application and
cited registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973). Thus, where the goods and services
in the application at issue and in the cited registration are
broadly described as to their nature and type, it is presumed in
each instance that in scope the application and registrations
encompass not only all goods and services of the nature and type
described therein, but that the identified goods move and the
factor. Compare In re General Motors Corp., 23 USPQ2d 1465, 1470-71
Ser. No. 75/698,975
7
recited services are rendered in all channels of trade which
would be normal for such goods and services and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Here, we agree with the Examining Attorney that
registrant's recitation of services is broad enough to encompass
a portion of applicant's services and that the former are
otherwise closely related to applicant's goods and its other
services. Specifically, we concur with the Examining Attorney
that registrant's "construction and maintenance services, namely
building, inspecting, maintaining, upgrading and removal of
towers and tower sites" necessarily includes applicant's services
of "construction, erection, and maintenance of cooling towers."
The words "towers" and "tower" in registrant's recitation of
services simply cannot be read, as urged by applicant, to
encompass only communication towers (such as antennas) to the
exclusion of cooling towers. Although applicant's particular
cooling towers, as shown by the specimens of use submitted with
respect to its "evaporative and conductive heat transfer
equipment, namely cooling towers, heat exchangers, industrial
cooling water treatment units, and parts thereof," appear to be
no higher than they are wide, such goods nonetheless are clearly
"towers" in that they are at least several stories in height.
Thus, while perhaps not "towers" in the strict sense of "a
building or a structure high in proportion to its lateral
dimensions, either isolated or forming part of a building," the
(TTAB 1992).
Ser. No. 75/698,975
8
dictionary cited by applicant, Webster's Encyclopedic Unabridged
Dictionary of the English Language (1996) at 2002, also defines
the term "tower" as "any structure, contrivance, or object that
resembles or suggests a tower," which is plainly the case with
applicant's goods. Applicant's cooling towers, therefore, must
be considered to be a type of tower and a kind which is included
within the "towers and tower sites" set forth in the recitation
of registrant's services.
Moreover, the specimens of use with respect to
applicant's "cooling tower rental services, and construction,
erection, and maintenance of cooling towers" demonstrate without
question that its cooling towers are indeed "towers" and are so
referred to in the trade. Such specimens, which are in the
nature of advertising brochures for its "Innovative Cooling
Towers," state that applicant's "Accessory Equipment Division
offers pumps, VFDs, automated isolation controls, separators,
heat exchangers, and custom control panels to assure maximum
tower efficiency"; its "Quality Assurance Program monitors each
factory-assembled tower's fabrication"; its "[f]actory-assembled
towers are certified by the Cooling Tower Institute"; and its
"preventive maintenance program assures peak tower performance
throughout the lifespan of your investment."
In consequence thereof, there is no reason not to
presume that registrant's services, as broadly recited in the
cited registration, are identical to applicant's services insofar
as the construction and maintenance of cooling towers is
concerned. Furthermore, in light of the overlap in such
Ser. No. 75/698,975
9
services, it is obvious that, inasmuch as applicant also offers
"evaporative and conductive heat transfer equipment, namely
cooling towers, heat exchangers, industrial cooling water
treatment units, and parts thereof" and "cooling tower rental
services," those goods and services are closely related to
registrant's cooling tower "construction and maintenance
services, namely building, inspecting, maintaining, upgrading and
removal of [such] towers and tower sites."
We find, therefore, that contemporaneous use of the
essentially identical marks "TOWER TECH" and "TOWERTECH" in
connection with, respectively, applicant's goods and services and
registrant's services would be likely to cause confusion. While
such products and services would clearly be purchased by
knowledgeable and sophisticated buyers only after careful
consideration, it is well settled that the fact that customers
exercise deliberation in choosing the goods and services at issue
"does not necessarily preclude their mistaking one trademark [or
service mark] for another" or that they otherwise are entirely
immune from confusion as to source or sponsorship. Wincharger
Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962). See also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983). Conditions are such that purchasers, despite the care
exercised in the selection of applicant's goods and services and
registrant's services, could reasonably assume, due to the
virtual identity between applicant's mark and registrant's mark,
that the goods and services emanate from the same entity.
Ser. No. 75/698,975
10
Turning next to the refusal under Section 2(e)(1), it
is well settled that a term is considered to be merely
descriptive of goods or services, within the meaning of such
section, if it forthwith conveys information concerning any
significant ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. See, e.g., In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used on or in connection with those goods or services
and the possible significance that the term would have to the
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
Ser. No. 75/698,975
11
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
The Examining Attorney maintains that because
"applicant's goods and services utilize cooling tower
technology," it is therefore the case that "the mark TOWER TECH
is merely descriptive of a feature or characteristic of the goods
and services, and is unregistrable on the Principal Register."
Citing, in support of her position, an excerpt which was made of
record from the Acronyms, Initialisms & Abbreviations Dictionary
(18th ed. 1994) at 3431, the Examining Attorney argues that "TECH
is the recognized abbreviation of TECHNOLOGY" and that technology
"is required for constructing and maintaining cooling towers."
Relying, in addition, upon various stories which were made of
record from a search of the "NEXIS" electronic database using the
search request "'TOWER TECHNOLOGY' AND COOLING," the Examining
Attorney further contends that "'tower technology' is a specific
engineering discipline used in the manufacture, construction,
Ser. No. 75/698,975
12
erection, and maintenance of cooling towers" and, thus, the
terminology "TOWER TECH" is merely descriptive of applicant's
goods and services. Representative samples of such stories,
which are set forth below (emphasis added), demonstrate however
that it is actually the phrase "cooling tower technology," rather
than "tower technology" per se, which designates the engineering
discipline or field pertaining to applicant's goods and services:
"... Systems Inc. in Golden has been
awarded a contract to supply its propriety
[sic] fiberglass composite cooling tower
technology for the Murray Gill Station in
Wichita, Kan." -- Rocky Mountain News
(Denver, Co.), December 6, 1998;
"Robert Burger is president of Burger
Associates, Inc., consultants, engineers, and
contractors specializing in cooling towers.
.... The foregoing article is excerpted from
'Cooling Tower Technology: Maintenance,
Upgrading and Rebuilding', Third Edition, By
Robert Burger ...." -- Energy User News,
December 1998;
"Cooling Tower Technology Seminar and
Conference, fossil Power Plants Business
Unit, Nuclear Maintenance Applications Center
and Nuclear Power Group ...." -- Electric
Light & Power, July 1997;
"Cooling Tower Technology 1 is a
[software] program to design and size cooling
towers for typical process applications." --
Chemical Engineering, November 1995;
"Cooling Tower Technology -- A Short
Course, an instructional diskette by Robert
Burger, Burger & Associates Inc. ...." --
Power, July 1994;
"Developments in cooling tower
technology have quietly gained momentum in
recent years. Now more choices stand ready
to answer just about every need in the power
generation industry." -- Power Engineering,
June 1994; and
Ser. No. 75/698,975
13
"COOLING TOWER technology, an
engineering discipline no more than 80 years
old, did not become a science until the 1920s
when Merkel and Tchebycheff performed their
systematic studies. Investigations and
integration formulas by these two pioneers
laid the basis for modern day cooling tower
heat transfer." -- Hydrocarbon Processing,
December 1989.
We will assume, without deciding, that for present
purposes, the term "TECH" in applicant's mark would indeed be
regarded by customers for its goods and services as signifying or
immediately conveying the meaning of "technology." However,
applicant's mark is "TOWER TECH," rather than "COOLING TOWER
TECH," and the "NEXIS" excerpts relied upon by the Examining
Attorney fail to demonstrate that the engineering discipline or
field pertaining to applicant's goods and services is known or
referred to as "tower technology." Instead, as noted above, they
show that such body of knowledge is called "cooling tower
technology."
Moreover, even if we were to assume that, in the
context of applicant's goods and services, the terms "TOWER TECH"
or "tower technology" would be regarded by purchasers and users
of its goods and services as shorthand expressions for "cooling
tower technology," we would still find that applicant's "TOWER
TECH" mark is not merely descriptive of such goods and services.
Specifically, while we disagree with applicant's assertions, for
the reasons explained previously, that its goods are not actually
"towers" and thus are not merely described by the word "tower,"
we concur with applicant that, based on the rationale expressed
in In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490,
Ser. No. 75/698,975
14
1493 (Fed. Cir. 1988), with respect to the significance of the
term "technology,"7 the mark "TOWER TECH" as a whole is not
merely descriptive of applicant's goods and services.8
Applicant, relying upon such case as support for its position,
argues with respect to use of its mark in connection with its
goods that:
The word "technology" is ... not
descriptive of any particular scientific or
engineering discipline, nor does it
7 In the case of an application filed by Hutchinson Technology Inc. to
register the mark "HUTCHINSON TECHNOLOGY" for "etched metal electronic
components; flexible circuits; actuator bands for disk drives; print
bands; increment discs; and flexible assemblies for disk drives," the
court found, among other things, that (footnote omitted):
"[T]echnology" is a very broad term which includes many
categories of goods. The term "technology" does not convey
an immediate idea of the "ingredients, qualities, or
characteristics of the goods" listed in Hutchinson's
application. Therefore, the term "technology" is not
"merely descriptive" of Hutchinson's goods, and we conclude
that the board's finding that the term "technology,"
standing alone, is merely descriptive of Hutchinson's goods
is clearly erroneous. The board offered no ... evidence to
support its findings on the effect of the inclusion of
"technology" in Hutchinson's mark as a whole.
Consequently, the board's findings on the effect of the
inclusion of "technology" in the mark, as a whole, also are
clearly erroneous."
7 USPQ2d at 1493. Curiously, we observe that the Examining Attorney
has offered no argument to distinguish such case and, in fact, did not
even mention it in her brief.
8 Applicant, noting the inconsistency in "the lack of a rejection under
Section 2(e)(1)" with respect to the "TOWERTECH" mark in the cited
registration, additionally asserts that, while such "is not limiting,
it should, at least, evidence the fact that at least one Examining
Attorney would agree with applicant's position" that its "TOWER TECH"
mark is not merely descriptive. Suffice it to say, however, that each
case must be determined on its own merits and the allowance of the
mark which is the subject of the cited registration, without resort to
a showing of acquired distinctiveness under the provisions of Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f), does not entitle
applicant to a finding that its mark is likewise registrable. See,
e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) ["Even if some prior registrations had some
characteristics similar to [applicant's] application, the ...
allowance of such prior registrations does not bind the Board"] and In
re Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Ser. No. 75/698,975
15
particularly describe industrial cooling
towers. The term "technology" is a very
broad term which includes many broad
categories of scientific and engineering
disciplines ranging from the science of
designing bowling balls to global positioning
systems, but does not describe an ingredient,
quality or characteristic of any one
particular category of goods. Specifically,
the term "technology" does not describe an
ingredient, quality or characteristic of
industrial cooling towers or their
manufacture, construction, erection, and
maintenance.
Accordingly, just as the court in Hutchinson, id. at
1492, found that "the fact that the term 'technology' is used in
connection with computer products does not mean that the term is
descriptive of them," the fact that applicant's goods and
services obviously utilize various elements of cooling tower
technology in the designing of the goods and the rendering of the
services does not mean that the terminology "TOWER TECH" or
"tower technology" is merely descriptive of any significant
ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. The Examining Attorney,
moreover, has not identified any such specific aspect of
applicant's goods or its services. At best, the terminology
"TOWER TECH" is therefore no more than suggestive, rather than
merely descriptive, of applicant's goods and services.
Finally, to the extent that we may nonetheless have any
doubt about our conclusion that applicant's "TOWER TECH" mark is
not merely descriptive of its goods and services, we resolve such
doubt, in accordance with the Board's practice, in favor of
applicant. See, e.g., In re Conductive Systems, Inc., 220 USPQ
84, 86 (TTAB 1983); In re Morton-Norwich Products, Inc., 209 USPQ
Ser. No. 75/698,975
16
791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ 565
(TTAB 1972).
Decision: The refusal under Section 2(d) is affirmed,
but the refusal under Section 2(e)(1) is reversed.